Patenting: A Guidebook For Patenting in a Post-America Invents Act World

October 8, 2015

Patenting generally offers a superior means for legally protecting most inventions, particularly since:

  • Copyright, when available, does not provide a broad scope of protection; and
  • The ability to effectively protect an invention as a trade secret is in constant jeopardy, due to publication or oral disclosure.

Unfortunately, the patenting process can be complicated, time-intensive and costly. However, costs can often be minimized and opportunities to establish value in products and technology maximized if professionals with an understanding of the patenting process are actively involved throughout. This book is intended to provide the necessary perspective.


What Is a Patent?

A patent is a government-issued document that provides its owner with rights to prevent competitors from profiting from the invention defined by the patent claims, for the duration of the patent term. In the U.S., any of three different kinds of patents may be applied for, depending on the nature of the subject matter to be protected: 

  1. The most popular utility patent protects a variety of products and processes, and is the focus of this publication. 
  2. The design patent protects any new, original, or ornamental design. 
  3. The plant patent is useful only for protecting new and distinctive asexually reproduced plant varieties. (Sexually reproduced varieties are also entitled to certain legal protection upon certification, pursuant to the Plant Variety Protection Act of 1970.)

The rights conferred by a patent can be enforced in court by the patent owner against competitor infringers to protect or increase the patent owner’s market share. For example, the patent owner can seek an injunction against and/or damages from any party infringing a valid claim of the patent. Alternatively, all or some of the rights can be contracted to a commercial partner (via an assignment or license agreement). A patent is an intangible asset and, depending on what it covers, may be very valuable. 

Download the Foley Hoag Patenting ebook (.pdf)